NY and SoFla real estate firms battle for the name “Cassa”

Suit accuses Miami-based TSG Paragon Development and others of trademark infringement

Jan.January 17, 2017 03:10 PM

Cassa Brickell (Inset: Camilo Lopez and Jorge Escobar)

New York-based Assa Properties is suing a South Florida real estate joint venture in federal court to stop using “Cassa” in its branding. 

In the recently filed lawsuit in the U.S. Southern District of New York, Assa accuses TSG Paragon Development, The Solution Group, Paragon Group of South Florida and 16 related shell companies of trademark infringement, unjust enrichment and consumer fraud, among other claims.

Assa attorney Richard J. Migliaccio declined comment. The firm is also seeking an injunction that would prohibit The Solution Group and Paragon Group joint venture from continuing to use “Cassa” for two its residential projects, Cassa at Georgetown in Pembroke Pines and Cassa Brickell in Miami.

A spokesperson for TSG, which was formerly The Solution Group, said the company doesn’t comment on pending litigation and also noted that the firm sold its interest in both projects last year to South Florida Equity Group Holdings LLC, which is also named as a defendant.

According to the lawsuit, Assa began using “Cassa” in 2007 as a combination of the Spanish word “casa” and the company’s name for several of its hotels in New York.  In 2012, TSG Paragon Development launched Cassa at Georgetown and Cassa Brickell using the same design as Assa’s brand in advertising and marketing materials, the lawsuit alleges.

In March 2009, The U.S. Patent and Trademark Office approved Assa’s application for exclusive use of “Cassa” for real estate development and the construction of commercial, residential and hotel properties. Four years later, The Solution Group filed an application for the “Cassa” trademark, which triggered two cease and desist letters from Assa demanding the Miami Design District-based firm stop using its brand.

“Both cease and desist letters were ignored despite the unquestionable prior use by plaintiff,” the lawsuit alleges. “Plaintiff timely filed an opposition to Solution Group’s application on April 1, 2014.”

A year later, the patent and trademark office ruled that The Solution Group did not provide evidence disputing Assa’s proprietary rights to the Cassa trademark. In October 2016, The Solution Group’s application was formally dismissed by the patent and trademark office, the lawsuit states.

Yet, The Solution Group and its affiliates continued to use Cassa and ignored a third cease and desist letter, Assa’s suit alleges. In addition, after Assa submitted an application to renew its trademark rights for “Cassa” last year, South Florida Equity Group Holdings filed a notice in opposition.

South Florida Equity bought The Solution Group’s interest in Cassa at Georgetown and Cassa Brickell in March of last year.

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